invention process @ technology transfer office of politecnico di milano

7/28/2019 Invention process @ Technology Transfer Office of Politecnico di Milano

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Invention process @ Politecnico di MilanoMassimo Barbieri

[email protected]


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TTO 2012

Professional background 2

Work Experience, Education and Training

MSc in Chemistry

IP training (around the world)

IP teaching

10 years of experience at TTO

IP trends blogger

http://brevettiblog.blogspot.com/


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3Introduction (1)

Most Italian universities have started to set up specific TTOsfrom 2001, That year was introduced the professor privilege

legal status

From 2004 to 2006 about 50% of TTOs were established


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4Introduction (2)

From 2004 to 2006 about 50% of TTOs were establishedA. Piccaluga et al. And Yet it Does Move! University Patenting and Licensing in Italy; Differences andSimilarities in the Management of Technology Transfer Activities at European Level - (June 28, 2009).Available at SSRN http://dx.doi.org/10.2139/ssrn.1426885

Main Common Tasks of a TTO

IPRs management is the main activity of a TTO.

supporting the identification and protection of the research results;

finding companies interested in the patents and signing license contracts

with them

supporting the researcher in the process of starting and growing spin-off

companies

High quality TTO should be able to:

Develop a quickly patent process when an invention has been identified;

From a pool of inventions, do a selection of those that have a concrete

possibilities of exploitation by one or more licensees.


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5Introduction (3)

Ways of protecting intellectual works

Patents

Utility models

Industrial designs

Trademarks


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6Introduction (4)

What is a patent?

A patent is a legal title granting the right to prevent third parties

from commercially exploiting an invention without authorization(negative monopoly right)

What is an invention?

Its the novel solution of a technical problem

Patentability requirements

Novelty

Inventive step

Industrial application


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7Introduction (5)

Utility models

This protection does not exist in all countries.

Patents and utility models differ in the level of the inventive step

required.

A utility model consists of improvements in shape which dont

constitute a solution of a technical problem but rather confers a

particular utility on a product, which already exists.


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8Introduction (6)

Ownership of rights

Under the Italian's Industrial Property legislation, the inventor-

researcher is THE sole owner of rights, stemming from the patentedinvention of which he is the inventor (art. 65).

If a university researcher decides to file a patent application as

owner, he should return to the University 50% of any revenue arising

from the exploitation of the invention.Politecnico di Milano has issued a Policy which establishes:

a researcher may decide to transfer the ownership of the patent

application to the University;

If the University accepts to assume ownership of the patentapplication, the University will pay all costs connected to filing and

prosecution and return the inventor 60% of any profits.


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9Invention process @ Politecnico di Milano

According to the procedure used by Politecnico the Invention

process is characterized mainly by four steps:

compilation of the Disclosure Form (an internal document consisting an invention description)

valuation of patentability requirements and the potential

commercial value

filing of the patent application

identification of potential licensees

negotiation of a licensing agreement


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10TTO functional model: IP protection (1)

First contact Meeting

DF drafting

Novelty search

Inventor contacts TTO

yes no

One of the most important step in the Invention Process is the drafting of a

document (Disclosure Form), which has essentially a dual purpose:

it contains a detailed description of the invention;

it constitutes a declaration of the inventors to transfer the ownership at the

University.

The detailed description of the invention allows the TTO staff to conduct an

effective novelty search.


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11

TTOs staff shall evaluate the content of Disclosure Form.

The criteria applied by TTO include:

the technical feasibility of the inventionthe patentability requirements

the assessment of a good probability that the invention can be transferred to

industry

TTO functional model: IP protection (2)

If the response is negative, the ownership (the patrimonial rights) will be given back

to inventors

If the response is positive, an Italian patent application will be filed


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PCT

6 months

Patent

publication

12 months

Before

thesis ITTTO

Inquest

State of the

art search

Patentability

search

Patentability

search

Monitoring

Filing

Patentability

search

12 months

When are patent searches carried out?

TTO functional model: prior art search (1)


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The inventors should fill in the DF with (and

without exceptions):

type of invention to protect

detailed description of the invention

advantages compared to state of the art

a list of keywords



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understand the invention: find out essential features

keywords: identify a group of words (and synonyms)

classification: select one or more classification codes corresponding to theinvention

databases

Searching for novelty can be difficult, because patent are legal

documents and not necessarily written for ease of searching; they are

drafted to be defended in court.

A patent search can be conducted in two ways:

by words (intuitive but subjective)

by classification



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15TTO functional model: IP protection (3)

TTO

yes noPatent filing Attorney

TTO staff will select a patent attorney who will be responsible for drafting thepatent application

the TTO staff will send to patent attorney a detailed description of the invention

the priority application will be filed in Italy (Italian mandatory law)

Typically TTO implements a strategy based on a national first filing, which

establishes a priority date

Inventors


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An application may be filed at one of the 103 Chambers of Commerce, directly at

the UIBM. An e-filing procedure is also available.

Under the current rules an application is kept under secrecy for military purposes

for a maximum of 90 days, after which it could be disclosed to the public if

advanced accessibility has been requested by the applicant, otherwise it is

available after 18 months, as usual.

The EPO carries out a search report for Italian patent applications filed from 1st July2008.

The application is sent to the EPO together with a translation of the claims in

English (provided by the applicant himself or made by the EPO at an official fee of

200, within 4 months from the filing date.

The EPO will send the UIBM a search report with a preliminary patentabilityopinion within 9 months from the filing date to allow the applicant to decide

whether or not to proceed with EP or other foreign extensions.

National filing

Source: G. Moradei Patent information in Italy, World Patent Information, 31 (2009), p. 19 - 31


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After the national filing there is one year to decide whether or not to extend the

patent.

During this year the TTO staff will proceed for finding companies potentially

interested to the patent. This phase requires works closely with the inventor.

Within one year from filing date, it is necessary to decide whether the patent is

extended or not at international level.

Patent strategy @ Polimi (1)


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18Patent strategy @ Polimi (2)

Demand

(optional)

IPRP

National orregional phases

Priority

IT

0 12 16 18 22 28 30

PCT filing

ISR + Written

Opinion

Publication

DEDE

EP

US

AU

PCT is basically an option for future patenting, that provides the applicant with a

further delay before deciding to apply or not.

The PCT process provides the advantage of a longer investigation of thetechnological potential of the invention, and in case of a negative assessment, the

application can be withdrawn before entering into expensive national or regional

phases.

Source: D. Guellec et al Applications, grants and the value of patent, Economics Letters, 69 (2000), p. 109 -

114

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